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					               TRADEMARK INFRINGEMENT IN CYBERSPACE
                                  By Karen Roberts and Robert Neller



           Andy Warhohl predicted in the 1960’s that, “In the future everyone will have their 15

minutes of fame.” Well, the future is here and, thanks to the Internet, people are snatching their

moments of fame on the Web and gaining instantaneous worldwide recognition for themselves,

their goods and their services. However, in doing so, some are usurping and trading on the fame

and good will of others, making cyberspace the new frontier where established consumer

protection policies are being tested and stretched to fit the landscape. One such area of

protection policy is trademark law where the tension between protected trademarks and their

unauthorized use in web sites has resulted in an explosion of infringement cases. This article

discusses the various forms of cyberspace infringement, as well as how we, as attorneys, can

guide our clients to avoid costly overzealousness.

           On the Internet, a domain name is the address at which a web site may be located. A

domain name is not itself a trademark and to procure such an Internet address, one need only

register a domain name which, until recently, was registered on a first-to-file basis without

further examination. Because domain name filings were not subject to scrutiny, cyberpirates

reserved other’s trademarks as their domain names or embedded those marks in their web sites in

order to hawk their goods or extort money from trademark owners.

           In general, a trademark is a word, logo, color or any combination thereof used to identify

the source of a good or product. A service mark is virtually the same, but is used to identify a

service rather than a good (both are referred to herein as trademarks).




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           Trademark infringement generally occurs when one uses a mark in commerce that is

identical to or confusingly similar to another’s trademark. Lanham Act §32(1), 15 U.S.C.A.

§1114(1); Lanham Act §43(a)(1)(A), 15 U.S.C.A. §1125(a)(1)(A). In cyberspace, trademark

infringement can occur at various levels within a web site and sometimes even upon the mere

registration of a domain name.

           It appears settled that while mere reservation of a domain name is not infringing, liability

may attach where the registration is coupled with wrongful intent. Jews for Jesus v. Brodsky, 993

F. Supp. 282, 307 (D. N.J. 1998); Juno Online Servs. V. Juno Lighting, Inc., 979 F. Supp. 684,

691 (N.D. ILL. 1997). One form of wrongful intent is the intent to extort money from the

trademark owner for the domain name. This has become known as “cybersquatting” or

“hijacking” and is actionable under trademark law. Panavision Int’l L.P. v. Toeppen, 945 F.

Supp. 1296, 1303 (D.C.Cal. 1996), aff’d, 141 F.3d 1316, 1324 (9th Cir. 1998); Jews for Jesus;

Juno Online Servs.

           Cybersquatting also occurs where an entity intentionally registers a domain name

containing a competitor’s name or trademark (or an obvious misspelling of them) and does so

not with the intention of selling the domain name, but to prevent the competitor from using its

own mark. Courts have found this hoarding of marks actionable because it creates the

implication that the competitor is out of business or not using the domain. Green Products Co. v.

Independence Corn By-Products Co., 992 F. Supp. 1070 (N.D. Iowa 1997)

           In what is being billed as the single biggest crackdown on cybersquatters, three Olympic

governing bodies have filed suit to shut down more than eighteen hundred web sites that use

domain names incorporating the trademarks “Olympic,” “Olympics,” “Olympiad” and

derivations of these names. The rogue sites run the gamut from pornography to gambling.




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While this case is pending, the gravamen is that the registrants are using the marks in bad faith

and are improperly profiting from the official Olympic trademarks.

           Similarly, Yahoo! successfully obtained a ruling that the address “campyahoo.com” was

confusingly similar to its own trademarks by demonstrating that the owner of

“campyahoo.com,” DomainCollection, registered the domain name in bad faith for the purpose

of extorting money either from Yahoo! or its competitors. Telecommunications giant AT&T

won against WorldclassMedia.com to claim the domain names “attmexico.com” and “att-

latinamerica.com” where it was found these registrations also were made in bad faith.

Conversely, the famous entertainer Sting failed to recover “sting.com” because he could not

show that registration was done in bad faith: the name Sting was not the singer’s real name (his

name is Gordon Sumner) and Sumner had not registered the word “Sting” (a common English

word) as a trademark or service mark.

           Trademark infringement claims also arise based upon use of another’s trademark in a

web site’s metatags and keywords.

           Metatags are invisible code embedded in a web site that are detected and prioritized by

search engines to enhance the usability of the Internet. The use of purely generic or descriptive

terms is not problematic, but legal issues of trademark infringement arise when the metatags

contain trademarks or confusingly similar marks to confuse or deceive the public. However,

where there is a legitimate reason for the use, the use may be allowed under the fair use

exception.

           In one of the earlier cases, a defendant used the Playboy and Playmate trademarks not

only in its domain name, but also embedded in its metatags, thereby, diverting consumers to its

website. The court enjoined the unauthorized use and required defendant to cancel its domain




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name registration. Playboy Enterprises, Inc. v. Calvin Designer Label, 985 F.Supp. 1220 (N.D.

Cal 1997).

           Playboy, however, was not successful in a later case where it sued a former Playmate of

the Year for trademark infringement because her web site and metatags also contained the words

Playboy and Playmate. The court found her use on the web site to have a legitimate reason and

was a “fair use” because the words truthfully identified her background and accomplishments.

Playboy Enterprises v. Welles, 7 F.Supp.2d 1098 (S.D. Cal. 1998).

           Recently, the Ninth Circuit held that a competitor could not use another’s trademark in its

metatag because it caused “initial interest confusion” – i.e., consumers looking for plaintiff’s

web site were diverted to defendant’s web site and simply stopped searching when they found a

satisfactory substitute. The court found trademark infringement, not because there was actual

consumer confusion as to the source of the goods or services (consumers recognized they were at

a competitor’s site), but because defendant diverted Internet business to its site and initially

benefited improperly from the goodwill plaintiff had developed. Brookfield Communications,

Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999).

           Another type of metatag is the keyword metatag. Keywords are advertising “trigger”

words that may be purchased from an Internet search engine to display an advertising banner

when a user enters a particular search term into the search engine. A case is currently pending in

New York on the very issue of whether anyone can purchase a keyword that is a trademark

without the consent of the trademark owner, or whether such an unauthorized purchase

constitutes trademark infringement. Estee Lauder Cos. V. Fragrance Counter Inc. (S.D.N.Y.

No. 99 Civ. 0382 (RWS) 9/24/99).




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           At the extreme, in two separate cases where the trademarks at issue were not identical,

the courts automatically found infringement without analyzing whether the marks were

confusingly similar. These decisions create unfortunate and potentially chilling ramifications.

Planned Parenthood of Am., Inc. v. Bucci, 42 U.S.P.Q. 2d 1430, 1441 (S.D.N.Y. 1997) and Jews

for Jesus v. Brodsky, 993 F.Supp. 282 (D.N.J. Mar. 6, 1998). In these cases, the courts reasoned

that the mere web presence of two competing entities made it unnecessary to analyze the

similarity of the goods or services, or the zone of natural expansion. The fact that each was

competing on the Internet meant that the parties offered similar services to similar consumers,

and, thus, were infringing.

           Hyperlinks (“Links”), the basic Internet navigational tool that allows users to connect

from one site to another can also result in trademark infringement. When the linking page

suggests approval by the owner of the linked page, or the linking page does not identify the true

source of the information, consumers are wrongly led to believe the linked page is the

information of the linking page. See Ticketmaster Corp. v Microsoft Corp. (C.D. Cal. Filed

April 28 1997) (‘deep-linking’ lawsuit, settled April 1999).

           Similarly, “framing” is the practice of maintaining a page border from the originally

accessed site onto the linked site. Trademark infringement occurs in this context when the

framing obscures the identity or source of the linked page and leads to consumer confusion by

suggesting a different source of the information or goods than the correct source. In Washington

Post v. Total News (S.D.N.Y. filed 2/20/97) a group of on-line news organizations sued Total

News, in part, on grounds of trademark infringement based on defendant’s use of framing to

import content from plaintiffs’ sites within the frame of defendant’s advertising-laden web site.




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The case settled with the defendant Total News agreeing not to frame without the permission of

the plaintiff news organizations.

           In some situations, the First Amendment may be invoked as a defense to allow a web site

operator to continue an unauthorized use of another’s trademark when the operator’s use of the

other’s trademark and identity are considered constitutionally protected. This protection may

arise because the use is newsworthy in that it carries a message of public or social interest, the

use constitutes artistic expression, or is a form of entertainment or is based on parody. In Lyons

Partnership v. Giannoulas, 51 USPQ2d 1364 (5th Cir. 1999), the creator of “Barney” the purple

dinosaur unsuccessfully sued for trademark infringement arising out of a comedy skit in which

the characters, including Barney, engaged in an exaggerated punching and wrestling match. The

court granted summary judgment in favor of defendant based on the First Amendment.

However, in another action, the plaintiff American Dairy Queen successfully obtained a

preliminary injunction enjoining use of a movie title ostensibly parodying beauty contests in

Minnesota. The court found the American Dairy Queen mark to be infringed and diluted by the

movie title. American Dairy Queen Corp. v. New Line Productions Inc., 35 F.Supp.2d 727

(D.Minn. 1998).

           “Gripe Sites” also have been found to be constitutionally protected free speech. These

sites are set up by parties who register, as a domain name, a variation of a company’s trademark

and dedicate the sites to electronically “roasting” a corporation. See Bally Total Fitness Holding

Corp. v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998). In Bally, defendant’s use of the domain

name ballysucks.com was considered protected speech because the site clearly communicated it

was not authorized by plaintiff and its purpose was to provide a forum for consumer commentary

on Bally health clubs.




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           As the Internet grows the remaining available domain names is shrinking. The Internet’s

oversight body, Internet Corporation for Assigned Names and Numbers is in the process of

accepting proposals to expand this pool of addresses by approving the addition of approximately

six new domain suffixes. New domain names with suffixes such as “.movie” or “.travel” are

being considered. While the policies on how these new domain names will be allocated have not

been resolved, the same issues will have to be handled concerning such legal issues as trademark

infringement.

           In light of the quickly evolving nature of cyberspace trademark infringement, clients

must take a number of precautions. Clients should avoid registering a domain name that is

identical to or confusingly similar to or an obvious misspelling of another’s trademark. Clients

also must be counseled to avoid the use of another’s trademark anywhere in their web site,

including metatags or keywords unless the use is for a legitimate reason. Care also must be

taken to avoid confusion as to the source of the content when framing or linking. Links, should

clearly indicate that they are to another’s web site and if clients wish to secure the benefit of

affiliating a link, permission or cross-linking agreements should be obtained from the site owner.

Alternatively, the client should incorporate disclaimers advising users that they are being

directed to a third-party site.

           As the Internet continues to expand, legal issues surrounding it will continue to grow

with the developing electronic commerce. As the courts, the public and lawyers become more

knowledgeable about this new means for doing business, trademark laws will evolve into a more

consistent set of policy guidelines structured for the realities of electronic commerce. We can

only hope that this understanding will come in time to protect everyone’s 15 minutes of fame.




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